Company going after .bank and .secure domain names gets a (weak) trademark.
A company hoping to offer .bank and .secure domain names has managed to get a trademark for .secure from the U.S. Patent and Trademark Office — albeit on the supplement register.
How did it do this, since the USPTO won’t grant trademarks on top level domains?
First, Asif LLC didn’t tell the USPTO the trademark was for a top level domain name. Instead, it says it’s for “Domain name registration services”.
Second, it submitted proof of use in commerce that was nothing more than a Go Daddy/Wild West Domains reseller page.
The company has also applied for a trademark for .bank using the same field of use and a GoDaddy reseller web site as proof of us. It is still pending.
The .secure registration number is 4068800.
[update: as Karen Bernstein points out, VeriSign filed to potentially oppose the application, but filed at the incorrect time. I don’t see an opposition to .bank.]
Reminds me of the method the sex.sex mark was obtained.
Interestingly, Verisign attempted to institute an opposition proceeding against the application for this mark but didn’t do it at the right time. It’s surprising to me that there have not been many objections lodged against companies trying to apply for new gTLDs. Objections may be lodged with the Commissioner of Trademarks before the publication period.
@ Karen – good find. Makes me wonder if .secure is one that VeriSign is thinking about applying for.
More gaming the system. Total BS.
Brad
It is one thing to get a TM. It is quite another to actually be able to enforce it.
Brad
Why not – you can get TM, the only reservation is that you can not mislead customers.
I don’t know why they bother. In the end all these sham marks get overturned in the courts. It’s like these jokers believe other would-be applicants will just roll over because they have a flimsy mark or secured a mark for some fringe use through fraud or deception. Most smart people see through this stuff. I’m surprised they’re so dumb about it.
I agree with other people here: the fact you get the TM doesn’t mean you’ll be able to get the corresponding TLD.
Getting trademark doesn’t mean they will get the tld but its close to it.
Lately, if a TLD was registered and in use before you got a trademark, WIPO and ICANN have pretty much gone against reverse domain hijack attempts.
I tried TM a .com years ago and was denied. Very similar app to the PTO but with a little more docs on use.
PTO has either changed their policy, been scammed or this guy found the route through the maze.
A US trademark registration can (and will) be cancelled if it is determined that the registration was obtained through fraud on the PTO. I don’t know the facts about this application and am NOT saying there is fraud here. Just making an observation . . .
Whats the benefit for doing it this way?
So will they try to UDRP for secure.com now?
This trademark will be cancelled if challenged by anyone. USPTO Appeals board came in with a precedent setting decision.
http://www.circleid.com/posts/20111201_the_death_of_tld_front_running/
This mark probably got thru a junior examiner, as did ‘dotfamily’ and ‘dotvegas’.
A .eco trademark was subsequently cancelled after a simple challenge.